Intellectual property law is good. Excess in intellectual property law is not. This blog is about excess in Canadian and international copyright law, trademarks law and patent law. I practice IP law with Macera & Jarzyna, LLP in Ottawa, Canada. I've also been in government and academe. My views are purely personal and don't necessarily reflect those of my firm or any of its clients. Nothing on this blog should be taken as legal advice.

Tuesday, March 02, 2010

US Supreme Court Ruling re §411(a) - Implications for GBS?

In a judgment that is highly technical but may have far reaching consequences, the US Supreme Court (per Justice Thomas) today ruled that even though §411(a) of the US Copyright Act generally makes registration a precondition to an infringement action, is not "jurisdictional" in the sense of restricting a federal court's subject-matter jurisdiction. This seems to mean that the Courts below could have ruled on a settlement in a class action lawsuit that involved both authors who had registered their copyright and those who not. The Second Circuit Court of Appeals had said that the District Court lacked jurisdiction because of the unregistered copyrights.

The section provides that:

§ 411. Registration and civil infringement actions

(a) Except for an action brought for a violation of the rights of the author under section 106A(a), and subject to the provisions of subsection (b),no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title. In any case, however, where the deposit, application, and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused, the applicant is entitled to institute a civil action for infringement if notice thereof, with a copy of the complaint, is served on the Register of Copyrights. The Register may, at his or her option, become a party to the action with respect to the issue of registrability of the copyright claim by entering an appearance within sixty days after such service, but the Register’

So, what does the section mean? Can the Courts below approve the claims of authors with unregistered copyrights?

Can someone now sue on the basis of unregistered copyright? The decision doesn't say this...but it seems that the Court can hear a case involving unregistered copyrights....

There is still a lot up in the air. The Court said:

In concluding that the District Court had jurisdiction to approve the settlement, we express no opinion on the settlement’s merits.

We also decline to address whether §411(a)’s registration requirement is a mandatory precondition to suit that— ... — district courts may or should enforce sua sponte by dismissing copyright infringement claims involving unregistered works.

What effect could this have on the Google Books litigation??? That proposed settlement is conspicuously limited in respect of US works as follows:

For United States works, the definition of Books remains largely unchanged: United States works must have been published and registered with the United States Copyright Office by January 5, 2009 to be included in the Amended Settlement.(emphasis added)

If the GBS is not approved by Judge Chin, will one side or the other or both want to sweep in unregistered works? Will they be able to?

Just wondering...

HK

PS - This indeed could be very important in the GBS context - see p. 9 ff of Pam Samuelson's submission to Judge Chin filed January 29, 2010 here. HT to Pam.